28 U.S.C. §1295(a)(1).
DISCUSSION
I. Standard of Review
Claim construction is reviewed de novo when relying
on intrinsic evidence. Teva Pharms. USA, Inc. v. Sandoz,
Inc.,
574 U.S. 318, 333 (2015). Infringement and damages
are reviewed for substantial evidence. Lucent Techs., Inc.
v. Gateway, Inc.,
580 F.3d 1301, 1309, 1324 (Fed. Cir.
2009). Statutory interpretation is reviewed de novo. Power
Integrations v. Semiconductor Components Indus., LLC,
926 F.3d 1306, 1313 (Fed. Cir. 2019). Patent-eligibility un-
der
35 U.S.C. § 101 is reviewed de novo. Recognicorp, LLC
Case: 20-2222 Document: 63 Page: 13 Filed: 02/04/2022
THE CALIFORNIA INSTITUTE v. BROADCOM LIMITED 13
v. Nintendo Co.,
855 F.3d 1322, 1326 (Fed. Cir. 2017). We
review patent jury instructions on patent law issues de
novo, asking if the instructions were legally erroneous and
prejudicial. Bettcher Indus., Inc. v. Bunzl USA, Inc.,
661
F.3d 629, 638-39 (Fed. Cir. 2011).
We review a district court’s order denying JMOL under
the standard applied by the regional circuit. Apple, Inc. v.
Samsung Electronics Co., Ltd.,
839 F.3d 1034, 1040 (Fed.
Cir. 2016). In the Ninth Circuit, JMOL “is proper when the
evidence permits only one reasonable conclusion and the
conclusion is contrary to that of the jury.” See Monroe v.
City of Phoenix,
248 F.3d 851, 861 (9th Cir. 2001). The
Ninth Circuit explains that “[t]he evidence must be viewed
in the light most favorable to the nonmoving party, and all
reasonable inferences must be drawn in favor of that
party.”
Id. The Ninth Circuit reviews a district court’s de-
cision to deny JMOL de novo.
Id.
II. Infringement
A. The ’710 and ’032 Patents
Broadcom and Apple argue that the district court erro-
neously construed “repeat,” contending that the accused
AND gates and multiplexers do not “repeat” information
bits in the manner claimed, but instead combine the infor-
mation bits with bits from a parity-check matrix to output
new bits reflecting that combination. Broadcom and Apple
further argue that the AND gates and multiplexers also do
not generate bits “irregularly,” asserting that they output
the same number of bits for every information bit. Caltech
argues in response that expert testimony throughout the
record establishes that every information bit is repeated an
irregular number of times. According to Caltech, the jury
heard testimony explaining that in the RU devices every bit
in the stream of information bits is fed by wire simultane-
ously to the information inputs of all 972 AND gates and
that at any time, at least 3 and up to 12 of those AND gates
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14 THE CALIFORNIA INSTITUTE v. BROADCOM LIMITED
will be enabled to repeat that bit at the output of the AND
gates. We find no error in the district court’s construction
of the term “repeat” and agree with Caltech that substan-
tial evidence in the record supports the jury’s verdict on in-
fringement.
1. Claim Construction of “repeat”
The district court construed “repeat” to mean “genera-
tion of additional bits, where generation can include, for
example, duplication or reuse of bits” (emphasis added). J.
App’x 171. Broadcom and Apple argue that that construc-
tion is inconsistent with the claim language, the specifica-
tion and the construction given by another judge in a
different case. 3 Caltech argues in response that the plain
claim language requiring repeating information bits does
not require generating new, distinct bits and that the dis-
trict court was correct in construing the term to not exclude
the reuse of bits. We agree with Caltech.
The district court correctly observed that the claims re-
quire repeating but do not specify how the repeating is to
occur: “The claims simply require bits to be repeated, with-
out limiting how specifically the duplicate bits are created
or stored in the memory.” J. App’x 10. The specifications
confirm that construction and describe two embodiments,
neither of which require duplication of bits. The district
court carefully and fully considered both the language of
the claims and that of the written description and faithfully
applied our precedent to reach the construction made dur-
ing the trial and presented to the jury. We are not
3 Broadcom and Apple misplace reliance on the con-
struction of the term “repeat” made on an undeveloped rec-
ord in the context of a summary judgment motion. See
California Institute of Technology v. Hughes Communica-
tions Inc.,
35 F. Supp. 3d 1176 (C.D. Cal. 2014).
Case: 20-2222 Document: 63 Page: 15 Filed: 02/04/2022
THE CALIFORNIA INSTITUTE v. BROADCOM LIMITED 15
persuaded that the district court erred in construing the
term “repeat” and, therefore, affirm the same.
2. JMOL on Infringement
Broadcom and Apple argue that the evidence before the
jury on infringement permitted only one verdict, namely no
infringement, and that the district court erred in denying
JMOL. Broadcom and Apple put forth two rationales for
noninfringement of the “irregular repeat” requirement, Ap-
pellant’s Br. 27–31. First, looking at each gate alone and
commenting on the “repeat” requirement, they argue that
the AND gate does not “repeat” the inputted information
bit “because the AND gate’s output depends on not only the
information bit but also the parity-check-matrix bit.” Ap-
pellant’s Br. 29. Second, focusing on the “irregular” half of
“irregular repeat,” they argue that “even if the outputted
bits could be deemed ‘repeats’ of the information bits,” “any
repetition is not ‘irregular’ because each information bit
leads to the same number of outputted bits.” Appellant’s
Br. 30.
Caltech argues in response that the jury was provided
with substantial evidence to support the verdict of infringe-
ment and that the district court correctly denied JMOL.
Caltech asserts that the fact that an AND gate doesn’t have
an information-bit/output match for every information bit
hardly means that it isn’t repeating any information bit.
Appellee’s Br. 21–22 (citing J. App’x 3036–38). All that
matters, according to Caltech, is that sometimes there is
such a match that qualifies as a “repeat,” so long as each
and every bit is repeated at least once. Caltech argues that
Broadcom ignores ample expert testimony, which the jury
could credit, that sometimes an AND gate repeats an infor-
mation bit and that, taking the 972 AND gates together,
the carefully designed parity-bit table/matrix meant that
“the products output and store information bits between
two and twelve times.” Appellee’s Br. 22. Caltech asserts
Case: 20-2222 Document: 63 Page: 16 Filed: 02/04/2022
16 THE CALIFORNIA INSTITUTE v. BROADCOM LIMITED
that, considering the system as a whole, each information
bit is in fact repeated, and they are not all repeated the
same number of times. We agree with Caltech.
Caltech’s expert, Dr. Matthew Shoemake began his tes-
timony with reference to the exemplary table reproduced
above. See J. App’x 3036–38. He explained that in the par-
ity-check-bit-equals-1 situation (second and fourth rows of
the table), the output bit is a “repeat” of the information-
bit input. Where the parity-check bit is 1, the gate affirm-
atively enables the information bit to be duplicated as the
output bit. That is a “repeat.” That is so, he explained,
because the information bit in that situation “flows
through” to appear again in the output. He also addressed
the one other situation where the output bit is identical to
the information bit, namely, in the first row of the above
table, where both the information bit and the parity-check
bit are 0, and so is the output. Despite the identity of the
information bit and the output bit, he explained, that situ-
ation does not involve a “repeat.” A 0 parity-check bit turns
every information bit (0 or 1) into a 0 output, so the output
bit in that situation tells one nothing about the information
bit. Since the whole point of this encoding scheme is to use
outputs that give information about the information bits, a
0 parity-check bit does not produce a “repeat” even when
the information-bit input and the output are the same.
Broadcom’s expert, Dr. Wayne Stark, expressly recognized
that this was exactly what Dr. Shoemake said in his testi-
mony. J. App’x 3956 (“He said it’s a repeat only if the ena-
ble [parity-check] signal is a one and it’s not a repeat if an
enable [parity-check] symbol is a zero.”).
Dr. Shoemake also explained to the jury that “flow
through” means that the information bit is repeated at the
output gate. See, e.g., J. App’x 2810, 2812, 3017–19. When
the information bit “flows through” to the output gate be-
cause the parity-check bit is 1, that’s a repeat, both accord-
ing to the expert’s usage and a plain understanding of the
Case: 20-2222 Document: 63 Page: 17 Filed: 02/04/2022
THE CALIFORNIA INSTITUTE v. BROADCOM LIMITED 17
word “repeat.” See, e.g., J. App’x 3038. When the infor-
mation bit is not allowed to flow through (because the par-
ity-check bit is 0), that’s not a repeat (even though both the
information bit and the output bit are 0). 4
In explaining the operation of the RU encoder itself, Dr.
Shoemake testified that it contains “972 mac_reg modules
[AND gates], and the information bits are connected to
every single one of them.” J. App’x 2831. He further testi-
fied that: “[D]epending on which information bit it is, 3 to
12 of these gates are enabled which then allows 3 to 12 …
[information bits] to flow through 3 to 12 times and since
that number varies, there’s irregular repetition,” J. App’x
3034-35; “[W]hat really happens in the accused products,
the tables tell you how many times should information bit
number one be repeated. And the tables I've mentioned
several times that they allow information bits, and I should
force information bits to be repeated between 3 and 12
times,” J. App’x 3080; and “[T]he information bit starts off
in one location in the chip, and then it’s connected to 972
distinct locations so it can be irregularly repeated in this
architecture.” J. App’x 3018.
Dr. Shoemake’s position was consistent throughout his
testimony: the physical connection of the first inputs of all
972 AND gates for simultaneous receipt of the information
bit stream and the connection of the parity-bit system to
the other inputs of the AND gates to selectively enable 3 to
12 of those gates at any time together implement irregular
4 Caltech’s Red Brief incorrectly cited this example
as representing a repeat. Red. Br. 21. This was evidently
error, given that it directly contracted the directly cited
pages of Dr. Shoemake’s testimony. This error does not,
however, change the fact that Caltech correctly identified
the substantial trial testimony on which the jury could base
its decision.
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18 THE CALIFORNIA INSTITUTE v. BROADCOM LIMITED
repetition. Dr. Shoemake explained that this is exactly
what one sees when one looks at the “overall architecture”
(“whole architecture”), not each gate alone. J. App’x 3031,
3035, 3038. As he specifically testified:
Q: Your position, your opinion . . . is that that
branch wire creates 972 repeat bits within the
meaning of the claims in the Caltech patents; cor-
rect?
A: So based on my analysis, this wire going
to the Mac rag modules and the AND gates
under control of the tables that are stored
in the RU encoder actually allows the infor-
mation bits to flow through [a] different
number of times. It’s always 3 to 12 times
for a particular information bit. And so [i]n
my analysis, this is exactly how the RU en-
coder is implementing irregular repetition
of information bits.
J. App’x 3019 (emphasis added).
For the foregoing reasons, substantial evidence sup-
ports the jury’s verdict of infringement of the ’710 and ’032
patents. We are not persuaded that the record before the
jury permits only a verdict of no infringement. We there-
fore affirm the district court’s denial of JMOL.
B. The ‘781 Patent
1. Patent Eligibility
Broadcom and Apple contend that claim 13 is not pa-
tent eligible under
35 U.S.C. § 101. Broadcom and Apple’s
briefing on this issue was cursory and relied solely on an
argument that claim 13 is ineligible because it depends on
mathematical operations. Caltech contends that the ’781
patent is directed to a patent-eligible method of performing
error correction and detection encoding with the require-
ment of irregular repetition. It asserts that the claim
Case: 20-2222 Document: 63 Page: 19 Filed: 02/04/2022
THE CALIFORNIA INSTITUTE v. BROADCOM LIMITED 19
limitation “variable number of subsets” requires irregular
information bit repetition.
The mere fact that Caltech’s claim employs a mathe-
matical formula does not demonstrate that it is patent in-
eligible. See Diamond v. Diehr,
450 U.S. 175, 187 (1981)
(“[A] claim drawn to subject matter otherwise statutory
does not become nonstatutory simply because it uses a
mathematical formula, computer program, or digital com-
puter.”). Claim 13 does not claim a mathematical formula
as such. It claims more than a mathematical formula be-
cause it is directed to an efficient, improved method of en-
coding data that relies in part on irregular repetition. This
alleged improvement is not patent ineligible simply be-
cause it employs a mathematical formula.
2. Infringement
Broadcom and Apple argue that even if claim 13 is di-
rected to patent eligible subject matter, the infringement
verdict as to claim 13 cannot stand. As discussed above,
the parties agree that claim 13 requires irregular repeti-
tion, but dispute whether the district court erred in refus-
ing to instruct the jury that the ’781 patent’s “variable
number of subsets” limitation requires irregular repetition.
The district court’s sole ground for refusing to instruct the
jury of the interpretation the parties and the court reached
during summary judgment was to avoid “confus[ing] the
record on this issue.” J. App’x 207. This was error and
requires remand for a new trial on infringement. Sulzer
Textil A.G. v. Picanol N.V.,
358 F.3d 1356, 1366 (Fed. Cir.
2004) (“[I]t is the duty of trial courts in patent cases in
which claim construction rulings on disputed claim terms
are made . . . to inform jurors both of the court's claim con-
struction rulings on all disputed claim terms and of the ju-
ry's obligation to adopt and apply the court's determined
meanings[.]”). On remand, the district court must instruct
the jury as to the proper construction of the claim limita-
tion “variable number of subsets.”
Case: 20-2222 Document: 63 Page: 20 Filed: 02/04/2022
20 THE CALIFORNIA INSTITUTE v. BROADCOM LIMITED
III. Validity and IPR Estoppel
Apple and Broadcom contend that the district court
erred in granting summary judgment of no invalidity, bar-
ring them from presenting an invalidity case at trial on the
ground of statutory estoppel. In the district court proceed-
ings, the parties challenged the patents’ invalidity, relying
on grounds the PTAB did not address in its earlier insti-
tuted IPR decisions. The district court nonetheless held
that these challenges were barred by estoppel because Ap-
ple and Broadcom were aware of the prior art references at
the time they filed their IPR petitions and reasonably could
have raised them in those petitions even if they could not
have been raised in the proceedings post-institution.
Before the district court, Broadcom and Apple brought
counterclaims seeking declaratory judgment of invalidity
under § 103. The district court’s summary judgment or-
ders disposed of the parties’ affirmative defenses as well as
their counterclaims. We therefore consider whether this
ruling was erroneous and review the grant of summary
judgment de novo. Synopsys, Inc. v. Mentor Graphics
Corp.,
839 F.3d 1138, 1146 (Fed. Cir. 2016).
When IPR proceedings result in a final written deci-
sion,
35 U.S.C. § 315(e)(2) precludes petitioners from rais-
ing invalidity grounds in a civil action that they “raised or
reasonably could have raised during that inter partes re-
view.” Shaw Industries Group, Inc. v. Automated Creel
Systems, Inc.,
817 F.3d 1293, 1300 (Fed. Cir. 2016) (empha-
sis added). In Shaw, this court held that IPR “does not
begin until it is instituted.”
Id. If IPR “does not begin until
it is instituted,” grounds raised in a petition (or that rea-
sonably could have been raised in a petition) were neces-
sarily not raised “during the IPR.”
Id. Only the grounds
actually at issue in the IPR were raised, or reasonably
could have been raised in the IPR. Thus, estoppel did not
bar the petitioner in Shaw from presenting a petitioned-
Case: 20-2222 Document: 63 Page: 21 Filed: 02/04/2022
THE CALIFORNIA INSTITUTE v. BROADCOM LIMITED 21
for, non-instituted ground in future proceedings because
the petitioner could not reasonably have raised the ground
during IPR.
Id. Shaw was followed in HP Inc. v. MPHJ
Technology Investments, LLC,
817 F.3d 1339, 1347–48
(Fed. Cir. 2016). At the time Shaw was decided, the PTAB
often instituted review on less than all the grounds raised
in a petition, which left some grounds unadjudicated on the
merits. Before Shaw, we had held in Synopsys, Inc v. Men-
tor Graphics Corp.,
814 F.3d 1309, 1314–15 (Fed. Cir.
2016), that the PTAB’s final decision need not address
every claim raised in a petition. Under such circum-
stances, we concluded that Congress could not have in-
tended to bar later litigation of the issues that the PTAB
declined to consider.
After Shaw, several district courts concluded that
Shaw does not allow a petitioner to avoid estoppel as to all
arguments that could have been raised in the petition. See,
e.g., SiOnyx, LLC v. Hamamatsu Photonics K.K.,
330 F.
Supp. 3d 574, 602 (D. Mass. 2018) (determining that estop-
pel applies to grounds not included in a petition that the
petitioner reasonably could have raised); Cobalt Boats,
LLC v. Sea Ray Boats, Inc., Case No. 15-cv-21,
2017 WL
2605977, at *3 (E.D. Va. June 5, 2017) (same); Biscotti Inc.
v. Microsoft Corp., Case No. 13-cv-1015,
2017 WL 2526231,
at *7 (E.D. Tex. May 11, 2017) (same); Douglas Dynamics,
LLC v. Meyer Prods. LLC, Case No. 14-cv-886,
2017 WL
1382556, at *5 (W.D. Wis. Apr. 18, 2017) (same); Parallel
Networks Licensing, LLC v. IBM Corp., Case No. 13-cv-
2072,
2017 WL 1045912, at *12 (D. Del. Feb. 22, 2017)
(same); Oil-Dri Corp. of Am. v. Nestle Purina Petcare Co.,
Case No. 15-cv-1067,
2017 WL 3278915, at *8 (N.D. Ill.
Aug. 2, 2017) (“[W]hile it makes sense that noninstituted
grounds do not give rise to estoppel because a petitioner
cannot—to no fault of its own—raise those grounds after
the institution decision, when a petitioner simply does not
Case: 20-2222 Document: 63 Page: 22 Filed: 02/04/2022
22 THE CALIFORNIA INSTITUTE v. BROADCOM LIMITED
raise invalidity grounds it reasonably could have raised in
an IPR petition, the situation is different.”).
Other district courts read Shaw differently, focusing on
Shaw’s discussion of the “during the IPR” language in
§ 315(e)(2). See, e.g., Koninklijke Philips N.V. v. Wangs All.
Corp., Case No. 14-cv-12298,
2018 WL 283893, at *4 (D.
Mass. Jan. 2, 2018) (“It would seem, then, that the phrase
“inter partes review” . . . refers only to the period of time
after review is instituted, and, therefore, the estoppel pro-
vision does not apply to arguments that the petitioner only
‘raised or reasonably could have raised’ in its petition ra-
ther than after institution of review.”); Verinata Health,
Inc. v. Ariosa Diagnostics, Inc., Case No. 12-cv-5501,
2017
WL 235048, at *3 (N.D. Cal. Jan 19, 2017) (“The [Shaw]
court chose instead to interpret the IPR estoppel language
literally, plainly stating that only arguments raised or that
reasonably could have been raised during IPR are subject
to estoppel.”); Intellectual Ventures I LLC v. Toshiba Corp.,
221 F. Supp. 3d 534, 553–54 (D. Del. 2016) (holding that
although exempting nonpetitioned grounds from estoppel
“confounds the very purpose of this parallel administrative
proceeding, the court cannot divine a reasoned way around
the Federal Circuit’s interpretation in Shaw”).
After Shaw, in SAS Institute, Inc. v. Iancu,
138 S. Ct.
1348 (2018), the Supreme Court made clear both that there
is no partial institution authority conferred on the Board
by the America Invents Act and that it is the petition, not
the institution decision, that defines the scope of the IPR.
See
id. at 1357–58 (“[T]he statute tells us that the peti-
tioner’s contentions, not the Director’s discretion, define
the scope of the litigation . . . There is no room in this
scheme for a wholly unmentioned ‘partial institution’
power that lets the Director select only some challenged
claims for decision.”). Given the statutory interpretation
in SAS, any ground that could have been raised in a peti-
tion is a ground that could have been reasonably raised
Case: 20-2222 Document: 63 Page: 23 Filed: 02/04/2022
THE CALIFORNIA INSTITUTE v. BROADCOM LIMITED 23
“during inter partes review.” Thus, the Supreme Court’s
later decision in SAS makes clear that Shaw, while per-
haps correct at the time in light of our pre-SAS interpreta-
tion of the statute cannot be sustained under the Supreme
Court’s interpretation of related statutory provisions in
SAS.
The panel here has the authority to overrule Shaw in
light of SAS, without en banc action. To be sure, SAS did
not explicitly overrule Shaw or address the scope of statu-
tory estoppel under § 315(e)(2). But the reasoning of Shaw
rests on the assumption that the Board need not institute
on all grounds, an assumption that SAS rejected. Even in
the Ninth Circuit, which has one of the stricter approaches
to panel overruling, see Henry J. Dickman, Conflicts of
Precedent,
106 Va. L. Rev. 1345, 1350–51 (2020), “the is-
sues decided by the higher court need not be identical in
order to be controlling. Rather, the relevant court of last
resort must have undercut the theory or reasoning under-
lying the prior circuit precedent in such a way that the
cases are clearly irreconcilable,” Miller v. Gammie,
335
F.3d 889, 900 (9th Cir. 2003) (en banc). We approved that
higher standard in Troy v. Samson Manufacturing Corp.,
758 F.3d 1322, 1326 (Fed. Cir. 2014), and conclude that
that standard is satisfied in this case.
Accordingly, we take this opportunity to overrule Shaw
and clarify that estoppel applies not just to claims and
grounds asserted in the petition and instituted for consid-
eration by the Board, but to all claims and grounds not in
the IPR but which reasonably could have been included in
the petition. 5 In a regime in which the Board must
5 In this case, SAS was decided while IPR proceed-
ings remained pending before the Board. Accordingly, we
need not decide the scope of preclusion in cases in which
Case: 20-2222 Document: 63 Page: 24 Filed: 02/04/2022
24 THE CALIFORNIA INSTITUTE v. BROADCOM LIMITED
institute on all grounds asserted and the petition defines
the IPR litigation, this interpretation is the only plausible
reading of “reasonably could have been raised” and “in the
IPR” that gives any meaning to those words.
It is undisputed that Apple and Broadcom were aware
of the prior art references that they sought to raise in the
district court when Apple filed its IPR petitions. Despite
not being included in any of Apple’s IPR petitions, the con-
tested grounds reasonably could have been included in the
petitions, and thus in the IPR. We affirm the district
court’s decision barring Apple and Broadcom from raising
invalidity challenges based on these prior art references.
IV. Inequitable Conduct
We turn next to the district court’s grant of Caltech’s
summary judgment motion of no inequitable conduct.
Generally, inequitable conduct requires a showing that un-
disclosed prior art was but-for material to the PTO’s deci-
sion of patentability. Therasense, Inc. v. Becton, Dickinson
and Co.,
649 F.3d 1276, 1291 (Fed. Cir. 2011). Prior art is
but-for material if the PTO would have denied a claim had
it known of the undisclosed prior art.
Id. Prior art is not
but-for material if it is merely cumulative. Regeneron
Pharms., Inc. v. Merus N.V.,
864 F.3d 1343, 1350 (Fed. Cir.
2017) (citing Dig. Control Inc. v. Charles Mach. Works,
437
F.3d 1309, 1319 (Fed. Cir. 2006)).
Broadcom and Apple on appeal have limited their ar-
gument to the district court’s conclusion that Richardson99
was not shown to be but-for material to patentability. The
district court found that Richardson99 was merely cumu-
lative of Luby97 and Luby98—references the PTAB consid-
ered in IPR proceedings upholding the patents’ validity—
the Board declined to institute on all grounds and issued
its final written decision pre-SAS.
Case: 20-2222 Document: 63 Page: 25 Filed: 02/04/2022
THE CALIFORNIA INSTITUTE v. BROADCOM LIMITED 25
noting Apple and Broadcom’s pleadings, interrogatory re-
sponses, and briefs failed to distinguish Luby’s disclosed ir-
regular repetition from Richardson99’s. Apple and
Broadcom did not argue at the summary judgment stage
that Richardson99 was different from Luby such that it
was not merely cumulative. The district court rejected the
arguments as to Richardson99 because the Appellants
failed to put Caltech on notice of an independent inequita-
ble conduct theory based on alleged differences between
Richardson99 and Luby.
The district court’s decision was not an abuse of discre-
tion. We therefore affirm the grant of summary judgment
of no inequitable conduct.
V. Damages
Caltech presented to the jury a two-tier reasonable roy-
alty model based on simultaneous hypothetical negotia-
tions with Broadcom and Apple in December 2009.
Broadcom and Apple generally argue that the damages
judgement cannot be sustained because Caltech’s damages
model impermissibly applied two separate hypothetical ne-
gotiations for Broadcom and Apple for sales of the same
chips; because Caltech’s royalty rates were derived from
non-comparable settlements—without apportionment and
based on improperly excluded expert opinions and unre-
lated “black box” calculations; and because Caltech’s dam-
age model improperly included extraterritorial sales.
Caltech argues in response that the damages judgment
properly rests on separate running-royalty rates for each
defendant, that the district court’s rulings on admissibility
and exclusion of evidence were not an abuse of discretion
and that the damages were based entirely on United States
sales.
We find no error in the district court’s jury instructions
relating to extraterritoriality. But because Caltech’s two-
tier damages theory is legally unsupportable on this
Case: 20-2222 Document: 63 Page: 26 Filed: 02/04/2022
26 THE CALIFORNIA INSTITUTE v. BROADCOM LIMITED
record, the damages award is vacated and the case is re-
manded for a new trial on damages.
A. Extraterritoriality
Apple and Broadcom argue that the damages verdict
improperly included extraterritorial sales from Broadcom’s
international affiliates. They argue that the district court
erroneously instructed the jury on extraterritoriality for
two reasons. First, they argue that the district court erro-
neously declined to instruct the jury of a presumption
against extraterritorial application of United States laws.
We see no error. The relevant presumption is whether a
law applies extraterritorially. See WesternGeco LLC v.
ION Geophysical Corp.,
138 S.Ct. 2129, 2134, 2136 (2018).
But the dispute here is not whether infringement laws ap-
ply domestically or extraterritorially—there is no dispute
that the laws apply only domestically. Rather, the dispute
between the parties is whether the relevant transactions
here were domestic or extraterritorial in nature. The pre-
sumption against extraterritorial application is thus inap-
plicable. As Caltech correctly argues, the district court
expressly instructed the jury that Caltech had the burden
of proving that infringement occurred in the United States.
J. App’x 184–85 (instructing the jury that “An allaged in-
fringer is liable for direct infringement of a claim if the pa-
tent holder proves by a preponderance of the evidence that
the infringer, without the patent holder’s authorization,
imports, offers to sell, sells, or uses [the accused products]
within the United States,” and explaining the factors for de-
termining whether a sale occurs in the United States).
This was a proper and sufficient jury instruction with re-
spect to the applicable burdens on the territoriality of the
sales at issue.
Second, Apple and Broadcom argue that the district
court erroneously instructed the jury that the “sales cycle
leading to design wins” could trigger a United States sale.
Apple and Broadcom argue that Halo recognized a
Case: 20-2222 Document: 63 Page: 27 Filed: 02/04/2022
THE CALIFORNIA INSTITUTE v. BROADCOM LIMITED 27
categorical prohibition against treating such a sales cycle
as a domestic sale. See Halo Elecs., Inc. v. Pulse Elecs.,
Inc.,
831 F.3d 1369, 1378 (Fed. Cir. 2016), on remand from
579 U.S. 93 (2016). Halo held that “pricing and contracting
negotiations in the United States alone do not constitute or
transform those extraterritorial activities into a sale
within the United States for purposes of § 271(a).” Id. It
held that this was so “when substantial activities of a sales
transaction, including the final formation of a contract for
sales encompassing all essential terms as well as the deliv-
ery and performance under that contract, occur entirely
outside the United States.” Id. This is not a blanket hold-
ing that design wins arising out of a sales cycle can never
be domestic transactions. Indeed, the district court noted
that a design win meeting these criteria, such that “sub-
stantial activities of a sales transaction . . . occurs entirely
outside the United States” would not constitute a sale
within the United States. J. App’x 185. The district court’s
jury instruction emphasized the key question of whether
there were such substantial activities in the United States,
an instruction that Apple and Broadcom do not contest.
See also Carnegie Mellon U. v. Marvell Tech. Grp., Ltd.,
807
F.3d 1283, 1308 (Fed. Cir. 2015). There is no error in the
district court’s permissive instruction.
B. Caltech’s Two-Tier Damage Model
Caltech presented its damage theory to the jury
through two experts, Dr. Catherine Lawton and Dr. David
Teece. They opined that Caltech would have engaged in
two simultaneous hypothetical negotiations, one with
Broadcom at the “chip level” and one with Apple at the “de-
vice level.” Those negotiations would have excluded from
Broadcom’s hypothetical chip license any Broadcom chips
incorporated into Apple products sold in the United States
and treated those identical chips as being subject to Apple’s
separate hypothetical device license at a vastly different
royalty rate. Both of Caltech’s experts testified that sepa-
rate chip-level and device-level negotiations would have
Case: 20-2222 Document: 63 Page: 28 Filed: 02/04/2022
28 THE CALIFORNIA INSTITUTE v. BROADCOM LIMITED
been proper, rather than a single hypothetical negotiation
for all of the accused chips, because both defendants were
separate infringers and there would be no “cross-talk” be-
tween them as they each engaged in their own hypothetical
negotiation.
The district court considered the opinions of Caltech’s
experts and, over Broadcom and Apple’s objection, permit-
ted Caltech to present that theory to the jury. In doing so,
the district court observed that “[p]atent owners will some-
times seek damages from accused infringers at different
levels in the supply chain, and so long as they do not at-
tempt to obtain a double recovery to violate other legal
principles like patent exhaustion, they are free to do so.” J.
App’x 225. In ruling in Caltech’s favor, the district court
saw no concern over double recovery because Broadcom
and Apple were different companies and because the ex-
perts’ opinions carved out of the Broadcom hypothetical ne-
gotiation chips sold to Apple. But in the absence of some
evidence that companies in the positions of Broadcom and
Apple would engage in such separate negotiations and in
the absence of additional facts that might justify separate
and different treatment of the same chips at different lev-
els of the supply chain, the mere fact that Broadcom and
Apple are separate infringers alone does not support treat-
ing the same chips differently at different stages in the sup-
ply chain and does not justify submitting such a two-tier
damage theory to the jury. It is generally recognized that
in the usual case, “a direct infringer or someone who in-
duced infringement should pay the same reasonable roy-
alty based on a single hypothetical negotiation analysis.”
LaserDynamics, Inc. v. Quanta Comput., Inc.,
694 F.3d 51,
76 (Fed. Cir. 2012).
Caltech argued that separate royalty rates at different
levels of the supply chain are proper because the reasona-
ble royalty inquiry focuses on the amount of value that the
patent technology adds to a product, citing Ericsson, Inc. v.
Case: 20-2222 Document: 63 Page: 29 Filed: 02/04/2022
THE CALIFORNIA INSTITUTE v. BROADCOM LIMITED 29
D-Link Sys.,
773 F.3d 1201, 1226 (Fed. Cir. 2014). The dis-
trict court concluded that Broadcom and Apple’s products
were different and therefore possessed different values
simply because Broadcom and Apple were “different com-
panies at different levels in the supply chain.” J. App’x 226.
But to reach that conclusion without more ignores estab-
lished precedent to the effect that, in the absence of a com-
pelling showing otherwise, a higher royalty is not available
for the same device at a different point in the supply chain.
As we previously held, “a reasonable royalty is not to be
separately calculated against each successive infringer.
Once full recovery is obtained from one infringer with re-
spect to a particular infringing device, at most nominal ad-
ditional damages may be awarded against another with
respect to the same device.” Stickle v. Heublein, Inc.,
716
F.2d 1550, 1562 (Fed. Cir. 1983). Moreover, “[a] party is
precluded from suing to collect damages from direct in-
fringement by a buyer and user of a product when actual
damages covering that very use have already been col-
lected from the maker and seller of that product.” Glenayre
Elecs., Inc. v. Jackson,
443 F.3d 851, 864 (Fed. Cir. 2006).
The district court cited but distinguished those cases
as only applying to damages calculations against two de-
fendants involving overlapping royalty bases, a situation
not existing here based on Caltech’s expert’s exclusion of
chips sold to Apple from the royalty base considered for
Broadcom. But that exclusion in this case is wholly con-
trived, lacks any basis of fact and is contrary to the custom-
ary way patent infringement disputes are ordinarily
resolved. It is well settled that a reasonable royalty is what
a willing licensor and a willing licensee would have agreed
to at a hypothetical negotiation just before infringement
began. See Carnegie Mellon Univ. v. Marvell Tech. Grp.,
807 F.3d 1283, 1303-1304 (Fed. Cir. 2015). Here, there is
nothing in the record to suggest that Broadcom and Apple
would have been willing to negotiate in this artificial way
rather than to more conventionally negotiate a single
Case: 20-2222 Document: 63 Page: 30 Filed: 02/04/2022
30 THE CALIFORNIA INSTITUTE v. BROADCOM LIMITED
license at a single rate for the same chips. Neither of Cal-
tech’s experts offered any factual basis to conclude that
Broadcom and Apple would have been willing to engage in
separate negotiations leading to vastly different royalty
rates for the same chips. The district court’s views to the
contrary and its limiting of the Stickle and Glenayre cases
to situations involving double recovery were misplaced and
erroneous. Caltech’s two-tier damages theory is legally un-
supportable on this record.
***
We need not and do not address Broadcom and Apple’s
indemnification argument, or their argument that the hy-
pothetical negotiations would have been held not with Cal-
tech but by its exclusive licensee, Inforon. Nor do we
address Broadcom and Apple’s argument based on small-
est-saleable-patent-practicing-unit, or the sufficiency of
the evidence as to the domestic or extraterritorial charac-
ter of Broadcom’s sales.
CONCLUSION
For the foregoing reasons, we affirm the district court’s
construction of the claim limitation “repeat.” We affirm the
district court’s denial of JMOL on infringement of the as-
serted claims of the ’710 and ’032 patents. We affirm the
district court’s conclusion that claim 13 of the ’781 patent
is patent-eligible but vacate the jury’s verdict of infringe-
ment thereof and remand for a new trial. We affirm the
district court’s summary judgment findings of no invalidity
based on IPR estoppel and no inequitable conduct. We af-
firm the district court’s jury instructions relating to extra-
territoriality, but vacate the jury’s damage award and
remand for a new trial on damages.
AFFIRMED IN PART, VACATED IN PART, AND
REMANDED.
Case: 20-2222 Document: 63 Page: 31 Filed: 02/04/2022
THE CALIFORNIA INSTITUTE v. BROADCOM LIMITED 31
COSTS
Each party shall bear its own costs.
Case: 20-2222 Document: 63 Page: 32 Filed: 02/04/2022
United States Court of Appeals
for the Federal Circuit
______________________
CALIFORNIA INSTITUTE OF TECHNOLOGY,
Plaintiff-Appellee
v.
BROADCOM LIMITED, NKA BROADCOM INC.,
BROADCOM CORPORATION, AVAGO
TECHNOLOGIES LIMITED, NKA AVAGO
TECHNOLOGIES INTERNATIONAL SALES PTE.
LIMITED, APPLE INC.,
Defendants-Appellants
______________________
2020-2222, 2021-1527
______________________
Appeals from the United States District Court for the
Central District of California in No. 2:16-cv-03714-GW-
AGR, Judge George H. Wu.
______________________
DYK, Circuit Judge, concurring-in-part and dissenting-in-
part.
While I join Discussion sections II.B.1, III, and IV of
the majority opinion, I respectfully disagree with the ma-
jority’s holding that substantial evidence supports the
jury’s verdict of infringement of the asserted claims of the
’710 and ’032 patents and would reverse the district court’s
denial of JMOL of no literal infringement. I would simi-
larly reverse the denial of JMOL rather than remand for a
Case: 20-2222 Document: 63 Page: 33 Filed: 02/04/2022
2 THE CALIFORNIA INSTITUTE v. BROADCOM LIMITED
new trial with respect to the infringement of the ’781 pa-
tent.
I
No matter how novel an invention is, it is the patent’s
claims that “determine what the invention is,” as well as
the bounds of the patent owner’s rights to that invention’s
“exclusive use.” Motion Picture Patents Co. v. Universal
Film Mfg. Co.,
243 U.S. 502, 510 (1917). Patent owners are
limited by the language in the claims, and “can claim noth-
ing beyond them.”
Id. (quoting Keystone Bridge Co. v.
Phoenix Iron Co.,
95 U.S. 274, 278 (1877)). It is the patent
owner’s burden to show that “the properly construed claim
reads on the accused device exactly.” CommScope Techs.
LLC v. Dali Wireless Inc.,
10 F.4th 1289, 1295 (Fed. Cir.
2021) (quoting Engel Indus., Inc. v. Lockformer Co.,
96 F.3d
1398, 1405 (Fed. Cir. 1996)). Denial of JMOL of no literal
infringement must be reversed when plaintiffs “fail[] to
present evidence proving that the [accused device] meets
the district court’s construction of [a] claim term.”
CommScope, 10 F.4th at 1295. Such a failure occurs when
expert testimony “points to the result . . . rather than the
specific mechanism claimed to achieve that result,” id. at
1297, or when expert testimony is merely “cursory,”
Alexsam, Inc. v. IDT Corp.,
715 F.3d 1336, 1341–42 (Fed.
Cir. 2013). Here, no showing of literal infringement has
been made that can support the jury’s infringement verdict
under the district court’s claim construction, which is not
challenged by Caltech.
II
Before trial, the district court held a Markman hearing
to construe the term “repeat,” an essential limitation in all
of the asserted claims of the three patents. Caltech advo-
cated for the term’s plain and ordinary meaning. Apple
and Broadcom proposed a narrower construction, contend-
ing that “repeat” should be construed as “creating a new bit
that corresponds to the value of an original bit (i.e., a new
Case: 20-2222 Document: 63 Page: 34 Filed: 02/04/2022
THE CALIFORNIA INSTITUTE v. BROADCOM LIMITED 3
copy) by storing the new copied bit in memory. A reuse of
a bit is not a repeat of a bit.” J.A. 9. The district court
rejected this construction because reusing bits by “selecting
the bits for use without necessarily storing them at a spe-
cific location in computer memory” could satisfy the claim
limitation. J.A. 10. The district court nonetheless noted
that the “claim language . . . makes clear that ‘repeated
bits’ are a construct distinct from the original bits from
which they are created.”
Id. Ultimately, the district court
adopted the term’s plain and ordinary meaning, concluding
that no further construction was required.
Following the Markman hearing, the parties continued
to dispute what exactly the plain and ordinary meaning of
“repeat” entailed. As a result, at trial, as permitted by
precedent, 1 the district court revisited and clarified its ear-
lier claim construction ruling, instructing the jury that the
’710 and ’032 patents’ claimed repetition requires the “gen-
eration of additional bits, where generation can include, for
example, duplication or reuse of bits.” J.A. 171. The criti-
cal question, therefore, is whether there is substantial evi-
dence that the accused devices cause “generation of
additional bits.” Unfortunately, in denying the appellants’
post-trial JMOL motion, the district court provided no
analysis of how Caltech established infringement, relegat-
ing this question to a footnote which said only that
1 It is within the district court’s discretion to “engage
in a rolling claim construction, in which the court revisits
and alters its interpretation of the claim terms as its un-
derstanding of the technology evolves.” See, e.g., Jack
Guttman, Inc. v. Kopykake Enters.,
302 F.3d 1352, 1361
(Fed. Cir. 2002) (citing Sofamor Danek Grp., Inc. v. DePuy–
Motech, Inc.,
74 F.3d 1216, 1221 (Fed. Cir. 1996)); Col-
legeNet, Inc v. ApplyYourself, Inc.,
418 F.3d 1225, 1233–34
(Fed. Cir. 2005).
Case: 20-2222 Document: 63 Page: 35 Filed: 02/04/2022
4 THE CALIFORNIA INSTITUTE v. BROADCOM LIMITED
“Defendants’ arguments that the verdict was not supported
by substantial evidence also remain unpersuasive.” J.A.
206.
The panel majority does not identify or rely on a reuse
theory to uphold the jury’s verdict. Rather, the majority
concludes that infringement of the repeat limitation was
supported by expert testimony that “the [AND] gate affirm-
atively enables the information bit to be duplicated as the
output bit. That is a ‘repeat’ . . . because the information
bit in that situation ‘flows through’ to appear again in the
output.” Maj. Op. at 16 (emphasis added). But there is in
fact no such expert testimony. To the contrary—consistent
with its claim construction position, Caltech’s expert testi-
fied that the claims do not “require that the repeat has to
be done by duplicating information bits,” J.A. 2858, and
Caltech argued to this court on appeal that “repetition does
not require duplication,” Appellee’s Br. 18.
To be sure, Caltech is correct that duplication is not re-
quired to satisfy the repeat limitation. But the problem for
Caltech (and for the majority) is that Caltech never estab-
lished that the accused devices generate “additional bits,”
as required by the district court’s claim construction. The
infringement theory presented at trial explained that the
accused devices work as follows: information bits are input
into the accused devices, those bits travel down branched
wires to the inputs of 972 AND gates, and three to twelve
of those AND gates will be open for each information bit,
thus outputting the bits a different number of times. For
this theory to satisfy Caltech’s burden, Caltech was re-
quired to establish where, when, and how additional bits
were generated.
One possibility—presented by Caltech’s counsel—was
that additional bits were generated by branching at the in-
puts. During closing arguments, Caltech told the jury
“That’s how you repeat bits, with a voltage along wires . . .
how else would you repeat bits? How else would you do it?”
Case: 20-2222 Document: 63 Page: 36 Filed: 02/04/2022
THE CALIFORNIA INSTITUTE v. BROADCOM LIMITED 5
1/28 Tr. 90:20–91:9. But the record does not support a the-
ory that the branched wires generate additional bits. Cal-
tech’s experts testified merely that the bits are “connected
to” the AND gates by branched wires, without explaining
whether or how that connection generated additional bits.
J.A. 2831. Apple and Broadcom presented unrefuted ex-
pert testimony that the branched wire connection involves
simultaneously sending the same bit—not an additional
bit—to the inputs of AND gates. Caltech’s expert did not
testify to the contrary, and in fact declined to testify that
branching generates additional bits.
Q. Branch wire creates repeat bits?
...
THE COURT: I’ll allow him to answer the question
if he understands it.
THE WITNESS: That question I did not under-
stand. I didn’t think it was well formed.
BY MR. MUELLER: Q. The branch wire in the
Broadcom chips in your view creates repeat bits
within the meaning of the claims; correct?
...
THE WITNESS: In my analysis the branch wire is
being used in conjunction with the tables and these
and gates to implement irregular repetition.
J.A. 3019–20. There is no substantial evidence supporting
an infringement verdict based on branching.
Caltech’s separate theory to establish that the accused
devices generate additional bits was the “flow through”
theory, supported, according to the majority, by expert tes-
timony that “the information bit ‘flows through’ to the out-
put gate [when] the parity-check bit is 1,” and that the flow
through bit constitutes “a repeat, both according to the ex-
pert’s usage and a plain understanding of the word.” Maj.
Case: 20-2222 Document: 63 Page: 37 Filed: 02/04/2022
6 THE CALIFORNIA INSTITUTE v. BROADCOM LIMITED
Op. at 16–17. The majority identifies record evidence
where Caltech’s expert summarily testified that the AND
gates repeated information bits when the gates are ena-
bled, J.A. 2842; J.A. 3080, and where the expert concluded
that the AND gates were “generating additional bits at
their output,” J.A. 4162. This cursory and conclusory tes-
timony cannot satisfy Caltech’s burden.
Caltech’s own expert testimony as to how an AND gate
functions forecloses concluding that the AND gates gener-
ate additional bits. Throughout trial, Caltech’s expert con-
sistently testified that an AND gate “act[s] like a switch . . .
allowing the information bits to flow through . . . or not.”
J.A. 3016–17; see also J.A. 3031 (“[E]nable one allows the
AND gate to act like a switch. So enable would close the
switch and allow the one to come out.”); J.A. 3030 (“[T]he
AND gate has two inputs. One of them is the enable that
allows the switch to open or close.”); J.A. 3031 (“Enable zero
is like the switch not allowing the information bit to flow
through.”). If an enabled AND gate merely allows the same
information bit that already exists at the input of an AND
gate “to come out,” J.A. 3031, or to “flow through,” this does
not remotely establish how the AND gate output generates
additional information bits. Under the explanation that
Caltech repeatedly presented, one information bit comes in
and one information bit comes out—no additional bit ap-
pears anywhere. Flow through, with a 1:1 ratio of input
bits to output bits as described by Caltech’s experts, cannot
satisfy the generation of additional bits limitation required
by the district court’s claim construction.
Caltech’s remaining theory submits that the accused
devices generate additional bits when the branched wires
are combined with the AND gates. The majority believes
that “the physical connection of the first inputs of all 972
AND gates . . . and the connection of the parity-bit system
to the other inputs of the AND gates to selectively enable 3
to 12 of those gates . . . together implement irregular repe-
tition.” Maj. Op. at 17. Neither the majority’s opinion,
Case: 20-2222 Document: 63 Page: 38 Filed: 02/04/2022
THE CALIFORNIA INSTITUTE v. BROADCOM LIMITED 7
Caltech’s briefs, and most importantly, Caltech’s experts,
explain why the combination of these two non-infringing
components results in infringement. The district court
therefore erred in denying JMOL of no literal infringe-
ment.
III
At trial, Caltech also presented a doctrine of equiva-
lents case to the jury. In a footnote to its JMOL decision,
the district court found that it was “not necessary” to ana-
lyze Apple and Broadcom’s challenge to the doctrine of
equivalents arguments, J.A. 206, and the majority here
similarly does not address such a theory. There is no basis
to sustain the verdict on a doctrine of equivalents theory.
To prevail, Caltech had the burden of proving equiva-
lence “between the elements of the accused product or pro-
cess and the claimed elements of the patented invention,”
Warner-Jenkinson Co. v. Hilton Davis Chem. Co.,
520 U.S.
17, 21 (1997), by showing that “the accused device contains
an element that is not ‘substantially different’ from any
claim element that is literally lacking,” Kraft Foods, Inc. v.
Int’l Trading Co.,
203 F.3d 1362, 1371 (Fed. Cir. 2000) (cit-
ing Warner-Jenkinson,
520 U.S. at 40).
Caltech’s appellate brief devoted only one and a half
pages to this issue, citing to eight pages of trial testimony
in which its expert asserted that the differences between
the accused chips and the claim limitations were insub-
stantial. At trial, Dr. Shoemake testified that because the
claims do not “require repeating with any type of specific
circuitry,” any differences in the method Broadcom’s chips
used to accomplish the “overall goal” of the claims were in-
substantial. J.A. 2856–58.
But even if no specific circuitry is required, Dr. Shoe-
make never explained why a bit flowing through to the out-
put of an AND gate is substantially similar to the claimed
device that generates additional bits. This is reminiscent
Case: 20-2222 Document: 63 Page: 39 Filed: 02/04/2022
8 THE CALIFORNIA INSTITUTE v. BROADCOM LIMITED
of the insufficient, “[g]eneralized testimony” proscribed by
Texas Instruments Inc. v. Cypress Semiconductor Corp.,
90
F.3d 1558, 1567 (Fed. Cir. 1996), and it cannot satisfy Cal-
tech’s burden to provide “particularized testimony and
linking argument as to the ‘insubstantiality of the differ-
ences’ between the claimed invention and the accused de-
vice or process . . . on a limitation-by-limitation basis,”
id.
There was no basis for the jury to find infringement under
the doctrine of equivalents.
I would reverse the district court’s denial of JMOL and
enter judgment of non-infringement for Broadcom and Ap-
ple.
